Should you renew a trademark that you’re not using?

Is the renewal date for your trademark approaching? You may be wondering whether to renew or let the renewal date pass and abandon the mark. Key in this decision is whether the mark has been put to good use and been fruitful for your business, and if not, whether it is still worth renewing a mark that you are not using.

Here are some helpful questions to consider when deciding whether to renew a mark that you’re not currently using.

• Are you able to renew?

Firstly, the question of ‘non-use’ must be explored, as a certain amount of non-use will mean that you are unable to renew your mark. Under EU regulations, for example, if a mark has not been put to genuine use in the past five years,  protection will be revoked – owners have no option to renew, the mark is simply lost. Although the exact parameters of this requirement can be unclear, genuine use is a question of both quality and quantity.

For example, an EU trademark that is used solely in one member state, but insufficiently elsewhere in the EU, may be liable for revocation on the grounds that it has not been put to genuine use.

When struggling with the quandary of whether to renew a trademark that you are not using, it is prudent to ascertain first whether such a renewal is possible or whether the extent of the non-use leaves the mark liable for revocation.

• Is the trademark renewal worth it?

Even if you have met the requirements for genuine use, the question of whether to renew your trademark remains.

If you don’t intend to use the trademark at all, then renewing it is likely unnecessary. A mark which will not be used and either forgotten or revoked is not worth the hassle and costs of undergoing renewal. On the other hand, if you plan to relaunch the brand in the future, then you may face issues if you have not maintained the relevant trademark registration (as Nike recently found to its cost).

When determining whether to renew, you must balance the costs of renewals against the potential value and profits associated with the continued protection of your trademark. Trademarks should be a source of profit for your business, so if an underused mark would cause financial losses if renewed, then abandonment should be considered. However, if there is any chance of the trademark recouping the renewal fee(s) over the 10-year protection term, then renewal may be worthwhile.

A final consideration when choosing whether to renew an underused trademark is the effort involved. Although renewals only require the completion of one form, it can still be an arduous process – especially in jurisdictions that require proof of use.

• Is renewing an unused trademark fair?

Aside from financial reasons for potentially not renewing a trademark, owners should also consider the fairness of restricting public use of the mark if their business is not using it. Registered trademarks are barred from use by third parties without the owner’s consent, so renewing your mark will mean that its use by third parties is prohibited. This restriction on use may be unfair if you do not use the mark.

On the other hand, it may be for this exact reason that you decided to renew your mark – prohibiting competitors and the public from using your intellectual creation may be the key motivation for registering it, regardless of the profits it may or may not create for the business.

If you are looking to renew your mark for this reason, however, you must remain on the right side of the genuine use requirement. Merely renewing to prevent others from using it or in case it may be of use one day in the future is not permitted – it must still be put to genuine use.

Final considerations

In conclusion, you should weigh the costs against the benefits of doing so, both financial and otherwise, when considering renewing a trademark that you do not use. Weighing up these factors may mean that you decide it is not worth renewing your underused trademark or, given the marginal costs, it is worth renewing in the hope that over the next decade the trademark recovers the money spent on renewal fees.

As always, if you’re unsure about what to do with your trademark rights, you should consult with an IP professional, as their advice will be tailored to your specific circumstances and requirements. For specific help or support, speak with your Novagraaf attorney or contact us through the website.